Ex Parte Nieto

Patent Trial and Appeal Board

Jun 22, 2017

13490016 (P.T.A.B. Jun. 22, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/490,016 06/06/2012 Nery J. Nieto Nieto-Avatar 1772
06/26/201760033 7590
MARK TERRY, ESQ.
801 BRICKELL AVE., SUITE 900
Miami, FL 33131
EXAMINER
GARG, YOGESH C
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
06/26/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mark@terryfirm.com
eofficeaction @ appcoll.com
yurie @ terry firm .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NERY J. NIETO
Appeal 2016-003520
Application 13/490,016
Technology Center 3600
Before MICHAEL J. STRAUSS, ADAM J. PYONIN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-003520
Application 13/490,016
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1—18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm and enter new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b).
THE INVENTION
The claims are directed to virtual reality-based environments
including user avatars. Spec., Title. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for reviewing items of clothing over a
communications network, comprising:
receiving an image of a consumer's face;
receiving measurements of the consumer's body;
generating a three-dimensional avatar of the consumer
based on the image and the measurements, wherein the avatar
comprises a surface correlating in size with the measurements;
generating a three-dimensional virtual reality graphical
environment including the avatar of the consumer and three-
dimensional virtual items of clothing;
receiving a selection from the consumer of a virtual item
of clothing comprising a surface that correlates in size to an
actual item of clothing;
determining whether the surface of the virtual item of
clothing fits around a predefined area of the surface of the avatar;
wherein if it is determined that the surface of the virtual
item of clothing fits around the predefined area of the surface of
the avatar, positioning the surface of the virtual item of clothing
over the predefined area of the surf ace of the avatar; and
displaying the virtual item of clothing over the predefined
area of the surface of the avatar for viewing by the consumer;
and
wherein if it is determined that the surface of the virtual
item of clothing does not fit around the predefined area of the
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surface of the avatar, displaying a message to the consumer
indicating that the virtual item of clothing does not fit the avatar.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kunigita US 2002/0107762 A1 Aug. 8, 2002
Moses et al. US 2013/0179288 A1 July 11, 2013
Ho Sun Lim, Three Dimensional Virtual Try-on Technologies in
the Achievement and Testing of Fit for Mass Customization
(Ph.D. dissertation, North Carolina State University, Raleigh,
North Carolina, 2009) (hereinafter “Lim”1).
REJECTIONS
The Examiner made the following rejections2:
Claims 1—7 stand rejected under 35U.S.C. § 101 as directed to non-
statutory subject matter. Final Act. 4—7.
Claims 1—18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kunigita, Moses, and Lim. Final Act. 7—13.
ANALYSIS
Non-Statutory Subject Matter
We initially note, although the Examiner finds claims 1—7 are directed
to non-statutory subject matter under the framework set forth in Alice Corp.
Pty Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014) (see Final
Act. 4—6), the Examiner has taken the position
1 The Examiner and Appellant refer to the reference as “Ho.”
2 The rejection of claims 8—18 under 35 U.S.C. § 101, has been withdrawn.
Final Act. 2. However, for the reasons infra, we re-impose the rejection.
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[i]f claim 1 is amended to recite that the steps of claim 1 are
executed by a processor/computer keeping in line with the other
two independent claims [8 and 15] and the applicant's
Specification then [the] rejection of claims 1—7 under 35 USC
101 will be moot and withdrawn.
Final Act. 6—7. The Examiner appears to conflate the four categories of
statutory subject matter with the judicial exceptions addressed by the Alice
decision. Claim 1 recites a method for reviewing items of clothing over a
communication network and, therefore, falls within the process category.
However, because we agree with the Examiner’s analysis concluding claim
1 falls within a judicial exception (i.e., an abstract idea), method claim 1
together with Beauregard3 claim 8 and apparatus claim 15 are unpatentable.
Under 35U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. 134 S. Ct. at 2354.
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of [these] concepts.” Alice Corp.,
134 S. Ct. at 2355. The first step in that analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts,”
{id.), e.g., to an abstract idea. In identifying the abstract idea, we must
evaluate “the ‘focus of the claimed advance over the prior art’ to determine
3 See In re Beauregard, 53 F.3d 1583 (Fed. Cir.1995).
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if the claim’s ‘character as a whole’ is directed to excluded subject
matter.” Affinity Labs of Tex., LLCv. DIRECTV, LLC, 838 F.3d 1253, 1257
(Fed. Cir. 2016). If the claims are not directed to a patent-ineligible concept,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered “individually and ‘as an ordered
combination’” to determine whether there are additional elements that
‘“transform the nature of the claim’ into a patent-eligible application.” Alice
Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298, 1297).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Turning to the framework set forth in Alice, and as the first step of
that analysis, we agree with the Examiner that the “claims are drawn to the
abstract idea of managing reviewing clothing [to determine] if it fits ... a
buyer before purchasing it by the buyer and related requirements.” Final
Act. 5.
Claim 1 includes alternative wherein clauses, one conditional on a
determination that the surface of a virtual item of clothing fits an avatar
representing a consumer, the other conditional on a determination that the
virtual clothing does not fit the avatar representing the consumer. Under a
broad but reasonable interpretation, claim 1 covers two alternative methods,
one if the surface of a virtual item of clothing fits, the other if clothing does
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not fit. See Ex parte Schulhauser, No. 2013-007847, 2016 WL 6277792, at
*4 (PTAB Apr. 28, 2016) (precedential) (discussing construction of
conditional limitations in method claims). In light of the claim’s conditional
language, the prior art need only teach one of the two alternatives, not both.
See id. Therefore, at least the positioning and displaying steps of claim 1 are
not required and, therefore, are not part of our analysis of claim 1 under
Alice.
In connection with the step of generating a three-dimensional virtual
reality graphical environment, the Specification fails to provide a definition
for the phrase. Therefore, under a broad interpretation, the step of
generating a three-dimensional virtual reality graphical environment
including an avatar of the consumer and three-dimensional virtual items of
clothing is satisfied by the combination of the listed elements, i.e., an avatar
and items of clothing, the avatar and clothing represented by “a collection of
data (points and other information).” Spec. 136.
Addressing the step of determining whether the surface of the virtual
item of clothing fits around a predefined area of the surface of the avatar, we
find no requirement the determination is based on attempting to wrap the
virtual clothing around the avatar or fit the avatar into the virtual clothing.
Therefore, under a broad interpretation, the determination may be
accomplished by some other process such as comparing the consumer
measurements (e.g., waist size) to the size of the actual item of clothing
corresponding to the selected virtual item of clothing.
Under our construction, claim 1 recites a method comprising, inter
alia, the steps of (1) receiving (a) an image of a consumer’s face and (b)
measurements of the consumer’s body; (2) generating a three-dimensional
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avatar of the consumer based on the image and measurements; (3)
generating a three-dimensional virtual reality graphical environment
including the avatar of the consumer and three-dimensional virtual items of
clothing; (4) receiving a selection from the consumer of a virtual item of
clothing comprising a surface that correlates in size to an actual item of
clothing4; (5) determining whether the surface of the virtual item of clothing
fits around a predefined area of the surface of the avatar; and (6) wherein if
it is determined that the surface of the virtual item of clothing does not fit
around the predefined area of the surface of the avatar, displaying a message
to the consumer indicating that the virtual item of clothing does not fit the
avatar. That is, claim 1 is equivalent to determining a selected item of
clothing is too small to fit a consumer. Yet the recited steps involve no more
than abstract concepts that could be performed in the human mind, or by a
human using a pen and paper, without the need of any computer or other
machine. “[A] method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under § 101.” CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372—73 (Fed. Cir. 2011);
see also Gottschalkv. Benson, 409 U.S. 63, 67 (1972) (“[phenomena of
nature . . ., mental processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work.”).
Moreover, mental processes remain unpatentable even when automated to
reduce the burden on the user of what once could have been done with pen
4 Appellant’s Specification discloses “an actual item of clothing for sale by a
physical store.” Spec. 124. Should prosecution be continued, the Examiner
may want to consider whether the claim limitation “actual item of clothing”
renders the independent claims indefinite under 35 USC § 112, second
paragraph.
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and paper. CyberSource, 654 F.3d at 1375 (“That purely mental processes
can be unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.”); OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“relying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.”).
In particular, receiving steps (l)(a), (l)(b), and (4) are conventional
information gathering steps and message displaying step (6) is insignificant
post-solution activity. Consistent with the Specification (Spec. 122), avatar
generating step (2) creates a three-dimensional “graphical representation of a
user or the user’s alter ego or character.” Presumably, although three-
dimensional computer graphics using three-dimensional modeling may be
employed to generate the avatar (Spec. 134—35), as also disclosed, “three
dimensional models can be created by hand” (Spec. 136). Virtual clothing
generating step (3) similarly includes creating a three-dimensional graphical
representation. Spec. 124. Thus, generating steps (2) and (3) may be
performed manually and, accordingly, at most correspond to conventional
information gathering steps (i.e., the input of manually created data points
and other information to, for example, a processing unit). Alternatively, if
the generating steps include automated generation of the collection of points
constituting the avatar and clothing, consistent with Appellant’s
characterization of appropriate software,5 the steps are considered to be
5 The Specification provides few details of how to generate a three
dimensional avatar, merely disclosing
In stage 425, the [consumer inputted] data collected in stage 420
is processed so as to place it in a form or format for creating a
user avatar in stage 430, wherein the avatar may comprise a three
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conventional data analysis. Thus, the generating steps do not contain any
enhancing limitations that can be said to entail an unconventional
technological solution to a technological problem. See Amdocs (Israel) Ltd.
v. Openet Telecom, Inc., 841 F.3d 1288, 1300-01 (Fed. Cir. 2016) (“the
claim’s enhancing limitation necessarily requires that these generic
components operate in an unconventional manner to achieve an
improvement in computer functionality. The enhancing limitation depends
not only on the invention’s distributed architecture, but also depends upon
the network devices and gatherers—even though these may be generic-
working together in a distributed manner.”). Fit determining step (5), as
broadly interpreted supra, may be performed by routine information
comparison (i.e., determining whether the applicable measurements are less
than that of the actual item of clothing as indicated by, e.g., the clothing’s
size).
Referencing the Supreme Court decision in Alice, Appellant argues
that although the Alice Court did not provide a definition of “abstract idea,”
the Court’s reasoning in Alice
implies that it intended to limit the concept of “abstract ideas” to
those concepts which are fundamental and long prevalent, and to
concepts which have been well-known and extensively used for
hundreds of years. It is further a very reasonable alternative
interpretation of Alice, given the opinion's strong emphasis on
the risk hedging claims in Bilski, the “intermediated settlement”
concept allegedly embodied in the claims at issue in Alice, and
the repeated references to “economic practices,” “finance class,”
dimensional graphical representation of one or more surfaces,
wherein the surface may depict varying colors and patterns and
wherein the surface may have a thickness. Further, the surface
of the avatar may move and may have elasticity characteristics.
Spec. 134.
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“commerce,” and “the modem economy,” that the Supreme
Court intended for “abstract ideas” to be limited primarily or
entirely to financial methods.
Br. 7. Pointing to the method steps recited in claim 1, Appellant maintains
the pending claims “go way beyond the basic process of determining
whether clothing fits a purchaser’s body [as found by the Examiner] and
which have gone ignored by the Examiner’s (lack of) analysis.” Br. 11.
Appellant argues the step of receiving an image of a consumer’s face, the
avatar generating step, and, in particular, the three-dimensional virtual
reality graphical environment generating step “has nothing to do with the
basic process of determining whether clothing fits a purchaser's body. In
fact, the basic process of determining whether clothing fits a purchaser's
body can be accomplished without the creation of an entire three-
dimensional virtual reality environment.” Br. 11—12. Appellant directs
attention to benefits of creating an “entire three-dimensional virtual reality
environment” as aiding the consumer in making shopping decisions with
additional benefits disclosed at paragraph 17 of the Specification. Br. 12.
We are unpersuaded. The Specification discloses only that there is a
need for “a more efficient way of harnessing the power of the online
shopping experience to accommodate consumers shopping for clothing
online.” Spec. 16. Appellant’s argument that the claims go “beyond the
basic process of determining whether clothing fits a purchaser’s body” by
requiring “creation of an entire three-dimensional virtual reality
environment” implies an overly narrow reading of the claim. As explained
supra, creation of the three-dimensional virtual reality environment
according to claim 1 is broadly interpreted to encompass the manual
generation of points and other information representing a three-
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dimensionalavatar and items of clothing. Likewise the determining step
does not require virtual manipulation of the clothing with respect to the
avatar (i.e., attempting to position the surface of the virtual item of clothing
over the predefined area of the surface of the avatar) to determine if the
clothing fits. Instead, the determining step could be reasonably performed
by a simple comparison of consumer body measurements to clothing size.
Thus, we are not persuaded the argued three-dimensional virtual reality
environment or method of determining whether an item of clothing fits
evidences claim 1 is not directed to an abstract idea. Furthermore, the
argued additional elements or combination of elements sufficient to ensure
that the claim amounts to “significantly more” than the abstract idea itself
(i.e., an “inventive concept”) are factors considered under step 2 of the Alice
framework, not step 1 as part of a determination of whether the invention is
directed to a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2355.
Appellant further argues, consistent with the decision in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) the
“claimed invention covers a rather involved process and method that goes
well beyond the basic idea of simply managing whether clothing fits a buyer,
and is therefore patent eligible.” Br. 13. We find this argument
unpersuasive. The claims in DDR Holdings were directed to a “challenge
particular to the Internet,” and did not “broadly and generically claim ‘use of
the Internet’ to perform an abstract business practice (with insignificant
added activity.)” 773 F.3d at 1257, 1258. For example, in DDR, the claims
involved, inter alia, “web pages displays [with] at least one active link
associated with a commerce object associated with a buying opportunity of a
selected one of a plurality of merchants.” Id. at 1249 (claim 19 of US
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7,818,399). There is no such web page with an active link in claim 1.
Rather, all that is required here is the input of a consumer’s image and size
data, generation of a virtual reality graphical environment including an
avatar and items of clothing, selection of an item of clothing, determination
the surface of the virtual clothing item does not fit around the avatar (i.e.,
whether the clothing is the proper size and shape), and display of a message
that the virtual item of clothing does not fit the avatar. The Specification
supports a finding that each of these steps is conventional at least in that
little or no detail is provided of how to perform the recited steps. For
example, no details are provided about how to generate an avatar or virtual
items of clothing or how a determination is made of whether the surface of
the virtual item of clothing fits around a predefined area of the surface of the
avatar. See, e.g., Spec. 126.
We are also unpersuaded the “claimed invention . . . recites processes
and structure that have NOT been well-known and extensively used for
hundreds of years and that have nothing to do with financial methods.” Br.
14. A conclusion an invention is directed to an abstract idea does not require
a finding the invention is well-known or has been used extensively. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714—15 (Fed. Cir. 2014)
(concluding “showing an advertisement before delivering free content” is an
abstract idea as a method of organizing human activity rather than an
economic practice or financial method as argued). Instead, “any novelty in
implementation of the idea is a factor to be considered only in the second
step of the Alice analysis.” Ultramercial, 772 F.3d at 715.
Furthermore, we disagree the invention is not directed to a
fundamental economic practice that has been well-known and used
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extensively. As found by the Examiner, the claims are directed to the basic
process of determining whether clothing fits a purchaser’s body, i.e.,
“managing reviewing of clothing if it fits or not a buyer before purchasing it
by the buyer and related requirements.” Final Act. 5. As discussed supra,
each of the required steps of claim 1 are fundamental sales practices. In
particular, the steps of receiving an image and body measurements are mere
information gathering steps such as a salesperson might observe and ask of a
customer. The generating steps are little more than the creation of
mathematical models (e.g., the set of points defining the surfaces of a three-
dimensional object) manipulable by, for example, a computer, to simulate
the real-world consumer and clothing. It is conventional to simulate
physical objects by values representing physical characteristics of the objects
(such as the claimed consumer’s body measurement and clothing size) just
as it is conventional to represent a count of the number of objects by a
numeric value rather than the physical object themselves. The steps of
receiving a selection is equivalent to a customer selecting a clothing item of
interest (e.g., informing a salesman of a clothing selection). The
determining step is merely comparing the size of the selected clothing item
to the consumer’s measurements (e.g., foot size to shoe size) or actually
trying-on the item to determine if the item of clothing fits the consumer.
Finally, if the clothing item does not fit, the final “wherein” clause of claim
1 provides an appropriate notification (e.g., the consumer recognizes the
clothing item is too small). Thus, although the recited steps are directed to
making a determination about real-world objects by simulating those objects
in a virtual environment, the recited steps merely simulate a method that has
been well-known and extensively used for hundreds of years, i.e., selecting
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clothing to see if it fits. Furthermore, we disagree the claimed invention has
nothing to do with financial methods because, as disclosed by Appellant, the
claims are directed to e-commerce and “using the Internet to purchase
clothing.” Spec. 13.
For the foregoing reasons, Appellant has not shown error in the
Examiner’s Alice step one determination that claim 1 is directed to a patent-
ineligible concept.
Addressing step two, we “search for an ‘inventive concept’—i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Alice, 134 S. Ct. at 2355 (alteration in original)
(quotingMayo, 132 S. Ct. at 1294). Appellant argues claim l’s requirement
of creating a three-dimensional reality world including the generation of an
avatar and virtual items of clothing “recites ‘significantly more’ than the
alleged basic idea of simply aiding a consumer in purchasing a product, as
the Examiner has expressed in the Final Office Action.” Br. 16—17. We
disagree, at least due to the following: the absence of persuasive evidence
and/or the failure of the Specification to disclose that any of the steps are, for
example, other than well-understood, routine, and conventional, improve the
functioning of a computer itself, could only be implemented by a specialized
machine, or otherwise add meaningful limitations that amount to more than
generally linking the use of the abstract idea to a particular technological
environment. In particular, claim 1 is a method that does not recite being
implemented on a computer. Nothing in claim 1 purports to improve
computer functioning or “effect an improvement in any other technology or
technical field.” Alice, 134 S. Ct. at 2359. Nor does claim 1 solve a
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problem unique to the Internet. See DDR Holdings, 773 F.3d at 1257. The
claim also is not adequately tied to “a particular machine or apparatus,”
especially because it is not tied to any machine or apparatus. Bilski v.
Kappos, 561 U.S. 593, 601-02 (2010). Accordingly, claim 1 does not
satisfy step 2 of Alice.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 101. For the same reasons, we also
sustain the rejection of dependent claims 2—7, which are not argued
separately. Because our reasoning differs somewhat from and/or adds to
that of the Examiner, we designate the affirmed rejection as a new ground of
rejection.
NEW GROUND OF REJECTION
Claims 8 and 15 are rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter for the reasons discussed supra in connection
with claim 1. However, in newly rejecting these claims, we additionally
address alternative conditional steps only performed if the surface of the
virtual item of clothing fits around the predefined area of the surface of the
avatar, steps that were not needed to be performed according to method
claim 1. In particular, Beauregard claim 8 and apparatus claim 15
respectively recite instructions and a computer system required to be capable
of performing the recited conditional steps. However, the additional steps of
(i) positioning the surface of the virtual item of clothing over the predefined
area of the surface of the avatar and (ii) displaying the virtual item of
clothing over the predefined area of the surface of the avatar for viewing by
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the consumer do not affect a conclusion that claims 8 and 15 are directed to
subject matter that is judicially-excepted from patent eligibility under § 101
In particular, the positioning step is the virtual equivalent of an actual
consumer putting on a physical item of clothing. The displaying step
provides for viewing of the virtual clothing item on the avatar, the equivalent
of, for example, a consumer, wearing a clothing item and looking in a
physical mirror. Appellant’s Specification fails to provide details of how the
virtual item of clothing is positioned on the avatar or the processing required
to effectuate display of the avatar wearing the clothing item. Accordingly,
inclusion of these steps fails to change our conclusion that claims 8 and 15,
like claim 1, are directed to abstract ideas. Furthermore both the positioning
and display steps are, at most, insignificant post-solution activity and,
therefore do not change our conclusion that the claims as a whole do not
amount to significantly more than the abstract idea.
Although claim 15 recites additional structures, to wit, memory
storage, a network connection device, and a processing unit operative to
perform the recited steps, such structures are merely components of a
generic computer (e.g., Spec. 138, Fig. 6) and, therefore, do not affect our
conclusion. See, e.g., DDR Holdings, 773 F.3d at 1256 (“[Ajfter Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible. The bare fact that a
computer exists in the physical rather than purely conceptual realm ‘is
beside the point.’” (citation omitted)).
Accordingly, we newly reject independent claims 8 and 15 under 35
U.S.C. § 101. For the same reasons, we also reject dependent claims 9-14
and 16—18.
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35 U.S.C.§ 103
Appellant argues neither Lim (referenced by the Examiner and
Appellant as “Ho”) nor the cited portions of Kunigita “disclose[s] a three-
dimensional avatar of the consumer, a three-dimensional virtual reality
graphical environment including the avatar of the consumer and three-
dimensional virtual items of clothing.” Br. 21,24. The Examiner finds
Kunigita discloses generating a “three-dimensional image of the body of the
user in accordance with the body size of the user, superimposing an object of
the commodity on the object of the user, and mapping a texture of the
commodity selected by the user onto the object of the commodity.” Final
Act. 8 (quoting Kunigita, Abstract). The Examiner relies on Lim for
disclosing “that the generated avatar is a three-dimensional avatar” and for
“generat[ing] a three dimensional virtual reality graphical environment
including the avatar of the consumer and three dimensional virtual items of
clothing.” Id. In particular, the Examiner cites Lim page 3, lines 1—4; page
38, lines 1—10; page 52, lines 5—15; page 72, lines 1—8; and page 148, lines
4—7. Final Act. 8—10; Ans. 4—7. Furthermore, in response to Appellant’s
arguments, the Examiner identifies portions of Kunigita disclosing an
“avatar of the user.” Ans. 5 (citing Kunigita 48, 57). We have reviewed
the cited portions of Kunigita and Lim and agree overwhelmingly with, and
adopt as our own, the Examiner in finding the combination of Kunigita and
Lim teaches or suggests the disputed limitations. Accordingly, we sustain
the rejection of claims 1—18 under 35 U.S.C. § 103(a) over Kunigita, Moses,
and Lim.
DECISION
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We affirm the Examiner’s decision rejecting claims 1—7 under 35
U.S.C. § 101 as directed to non-statutory subject matter, and we designate
our affirmance of claims 1—7 as a new ground of rejection.
We newly reject independent claims 8—18 under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
We affirm the Examiner’s decision rejecting claims 1—18 under 35
U.S.C. § 103(a) over Kunigita, Moses, and Lim.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, Appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground[s] of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground[s] of rejection [are]
binding upon the Examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground[s] of rejection
designated in [this] decision. Should the examiner reject the
claims, [Ajppellant may again appeal to the Board pursuant to
this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
18
Appeal 2016-003520
Application 13/490,016
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
37 C.F.R, $ 41.50(b)
19